Trials@uspto.gov
`571-272-7822
`
`Paper No. 20
`Entered: March 7, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PNC BANK N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2021-01399
`Patent 10,013,605 B1
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 20
`Entered: March 7, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PNC BANK N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2021-01399
`Patent 10,013,605 B1
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2021-01399
`Patent 10,013,605 B1
`
`I. INTRODUCTION
`A. Background
`PNC Bank N.A. (“Petitioner” or PNC) filed a Petition requesting inter
`partes review (“IPR”) of claims 1–29 of U.S. Patent No. 10,013,605 B1
`(Ex. 1001, “’605 Patent”). Paper 3 (“Pet.”). Petitioner filed a Declaration of
`Dr. Todd Mowry with its Petition. Ex. 1002. United Services Automobile
`Association (“Patent Owner”) filed redacted and unredacted versions of its
`Preliminary Response (Papers 8, 10 (“Prelim. Resp.”)), along with a Joint
`Motion to Seal Exhibit 2006 and certain portions of the Preliminary
`Response referencing Exhibit 2006 (Paper 9). With our authorization,
`Petitioner filed redacted and unredacted versions of its Preliminary Reply
`(Papers 11, 13), and Patent Owner filed redacted and unredacted versions of
`its Preliminary Sur-reply (Papers 14, 17). Petitioner filed a corresponding
`Motion to Seal certain portions of the Preliminary Reply that reference
`Exhibit 2006 (Paper 12) and Patent Owner filed a corresponding Joint
`Motion to Seal certain portions of the Preliminary Sur-reply that reference
`Exhibit 2006 (Paper 16).1
`We have authority to determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be
`instituted unless it is determined that “the information presented in the
`petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`
`
`1 Papers 8, 11, and 14 were filed under seal, and Papers 10, 13, and 17,
`respectively, are the corresponding public versions. This Decision does
`not refer to any information that was redacted from the public documents.
`
`2
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`IPR2021-01399
`Patent 10,013,605 B1
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a) (2018).
`For the reasons provided below, we determine, based on the record
`before us, there is not a reasonable likelihood Petitioner would prevail in
`showing at least one of the challenged claims is unpatentable.
`
`B. Related Matters
`The parties indicate the ’605 Patent and several related patents are the
`subject of litigation in United Services Automobile Association v. PNC Bank
`N.A., No. 2:20-cv-00319-JRG (E.D. Tex.), United Services Automobile
`Association v. PNC Bank N.A., No. 2:21-cv-00246-JRG (E.D. Tex.)
`(“related district court proceeding”), and United Services Automobile
`Association v. BBVA USA, No. 2:21-cv-00311-JRG (E.D. Tex.). See Pet. 2;
`Paper 6, 2; Paper 18, 1.
`The parties identify the following PTAB proceedings as involving the
`’605 Patent and many related patents:
`Challenged
`Patent
`PNC
`IPR2021-01070
`US 8,699,799
`PNC
`IPR2021-01073
`US 8,977,571
`PNC
`IPR2022-00075
`US 9,224,136
`US 10,013,605 CBM2019-00029 Wells Fargo
`US 10,013,605
`IPR2020-01742 Mitek
`US 10,013,681
`IPR2021-01381
`PNC
`
`Status
`
`Trial Instituted
`Trial Instituted
`Petition Filed
`Institution Denied
`Institution Denied
`Institution Denied
`Settled Prior to
`Institution Decision
`Petition Filed
`Petition Filed
`
`Case No.
`
`Petitioner
`
`US 10,402,638
`
`IPR2020-01516 Wells Fargo
`
`IPR2022-00049
`IPR2022-00050
`
`PNC
`PNC
`
`3
`
`
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`IPR2021-01399
`Patent 10,013,605 B1
`
`Challenged
`Patent
`
`Case No.
`
`Petitioner
`
`Status
`
`US 10,482,432
`
`US 10,621,559
`
`IPR2021-01071
`IPR2021-01074
`IPR2021-01076
`IPR2021-01077
`IPR2022-00076
`US 10,769,598
`Pet. 2–3; Paper 6, 2–3; Paper 18, 1–2.
`
`PNC
`PNC
`PNC
`PNC
`PNC
`
`Institution Denied
`Institution Denied
`Institution Denied
`Institution Denied
`Petition Filed
`
`C. The ’605 Patent (Ex. 1001)
`The ’605 Patent issued from U.S. Patent Application No. 15/663,284,
`filed on July 28, 2017. Ex. 1001, codes (21), (22). The ’605 Patent, through
`intervening U.S. Patent Application No. 14/225,090, claims entitlement to
`the benefit of an earlier effective filing date of October 31, 2006, based on
`U.S. Patent Application No. 11/590,974 (Exhibit 1042, “’974 Application”),
`which issued as US. Patent No. 8,708,227 B1 (Ex. 1037, “Oakes I”). Id. at
`code (63); Ex. 1015, 105, 121.
`The ’605 Patent is directed to a system for depositing checks
`remotely. See id. at code (57), 2:10−54.
`
`4
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`IPR2021-01399
`Patent 10,013,605 B1
`Figure 1 of the ’605 Patent is reproduced below:
`
`
`Figure 1 depicts a system in which the described method may be employed.
`See Ex. 1001, 2:63–64, 3:36–37. System 100 includes account owner 110
`(e.g., a bank customer located at their private residence) and an associated
`customer-controlled general purpose computer 111 communicatively
`coupled to image capture device 112, as well as publicly accessible
`network 120, financial institution 130 and server 131, network 125, and
`other entities 140, 150 associated with account 170. See id. at 3:36–58,
`6:27–28. For example, account owner 110 who has account 160 at financial
`institution 130 may use general purpose computer 111 and image capture
`device 112 to generate images of a check and send the images to server 131
`associated with financial institution 130, via publicly accessible
`network 120. See id. at 3:40–41, 3:43–50, 7:1–17. Financial institution 130
`may forward the image over network 125 to one or more other
`entities 140, 150, associated with account 170 on which the check was
`drawn. See id. at 3:55−58, 6:57–63, 7:43–50. General purpose
`computer 111 “may be in a desktop or laptop configuration.” Id. at 3:65−66.
`
`5
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`IPR2021-01399
`Patent 10,013,605 B1
`“Image capture device 112 may be, for example, a scanner or digital
`camera.” Id. at 6:29–30.
`
`To deposit a check drawn from account 170 at financial
`institution 150 into account 160, account owner 110 converts the check into
`a digital image by scanning the front and/or back of the check using image
`capture device 112. See Ex. 1001, 9:16–21, 9:27–29. A server includes a
`subsystem for analyzing the image of the front side of the check to see if it
`meets at least one criterion, for example, to recognize that the image is a
`check, the check is not a duplicate, and that the received image can be used
`to further process the transaction. See id. at 10:65–11:5. The server
`comprises a system for performing Optical Character Recognition (OCR)
`which can be useful for determining the check amount and magnetic ink
`character recognition (MICR) line information, such as routing number,
`account number, check number. See id. at 11:25–31. The aforementioned
`information can then be validated. See id. at 11:33–37. The server also
`includes a subsystem for error processing. See id. at 11:55–12:2.
`
`D. Illustrative Claim
`Claims 1 and 12 are independent, and claims 2–11 and 13–29 depend
`therefrom, respectively. See Ex. 1001, 15:10–18:22. Claim 1 is illustrative
`and reproduced below:
`1. An image capture and processing system for use with a
`digital camera, the image capture and processing system
`comprising:
`a portable device comprising a general purpose computer
`including a processor coupled to a memory, the memory
`storing:
`camera software comprising instructions that, when
`executed by the processor, control the digital camera;
`
`6
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`IPR2021-01399
`Patent 10,013,605 B1
`a downloaded software component configured to control
`the camera software and to manage capturing
`electronic images, the software component
`comprising instructions that, when executed by the
`processor, cause the portable device to perform
`operations including:
`instructing a user of the portable device to place a
`check in front of the digital camera and have the
`digital camera capture electronic images of front
`and back sides of the check;
`displaying an instruction on a display of the portable
`device to assist the user in having the digital
`camera capture the electronic images of the check;
`assisting the user as to an orientation for capturing the
`electronic images of the check;
`presenting the electronic images of the check to the
`user after the digital camera captures the electronic
`images;
`transmitting, using a wireless network, a copy of the
`electronic images over a public electronic
`communications network from the portable device,
`wherein the transmitted copy of the electronic
`images is a modified version of the electronic
`images captured with the digital camera, the
`modified version having a different electronic
`format than the images captured with the digital
`camera; and
`submitting the check for deposit after the system
`authenticates the user and after presenting the
`electronic images of the check to the user;
`a plurality of processors coupled to a plurality of memory
`devices storing instructions that, when each instruction of
`the instructions is executed by a processor of the plurality
`of processors coupled to a memory device of the plurality
`of memory devices storing that instruction, cause the
`system to perform additional operations including:
`confirming that the deposit can go forward after
`performing an optical character recognition on the
`check, the optical character recognition including
`determining an amount of the check, comparing the
`
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`IPR2021-01399
`Patent 10,013,605 B1
`determined amount to an amount entered by the user
`into the portable device, and reading a MICR line of
`the check;
`initiating the deposit after the confirming; and
`generating a log file for the deposit, the log file including
`a bi-tonal image of the check; and
`another computer, remote from the portable device,
`comprising a processor coupled to a memory storing
`instructions that, when executed by the processor, cause
`the other computer to update a balance to reflect the
`amount of the check submitted for deposit by the portable
`device.
`Ex. 1001, 15:9–16:3.
`E. Asserted Challenges to Patentability and Asserted Prior Art
`Petitioner asserts that claims 1–29 would have been unpatentable
`based on the following grounds (Pet. 6):
`
`Claim(s) Challenged 35 U.S.C. §
`12–23, 26–29
`103(a)2
`12–23, 26–29
`103(a)
`
`1–11, 24, 25
`
`103(a)
`
`Reference(s)/Basis
`Oakes I3, Oakes II4
`Oakes I, Oakes II, Medina5
`Oakes I, Oakes II, Roach6 or
`Oakes I, Oakes II, Roach, Medina
`
`
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’605 Patent claims an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version of § 103.
`3 US 8,708,227 B1, issued Apr. 29, 2014 (Ex. 1037).
`4 US 7,873,200 B1, issued Jan. 18, 2011 (Ex. 1038).
`5 US 9,129,340 B1, issued Sept. 8, 2015 (Ex. 1058).
`6 US 2013/0155474 A1, published June 20, 2013 (Ex. 1040).
`
`8
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`IPR2021-01399
`Patent 10,013,605 B1
`II. REAL PARTY-IN-INTEREST AND DISCRETIONARY DENIAL
`As explained in detail below, we deny institution of inter partes
`review on the merits because the Petition fails to demonstrate that Oakes I,
`Oakes II, Medina, and Roach qualify as prior art to the challenged claims of
`the ’605 Patent. Based on our determination in this regard, we need not
`reach the following three issues: (1) whether the Petition should be denied
`under 35 U.S.C. § 312(a)(2) because Mitek should have been named as a
`real party-in-interest; (2) whether the arguments and evidence presented in
`the Petition were considered and rejected previously in prior proceedings;
`and (3) whether the non-exclusive list of six factors set forth in Fintiv
`warrants the exercise of the Board’s discretion to deny institution when there
`is a related district court proceeding involving the ’605 Patent. See Prelim.
`Resp. 5–21; Pet. Reply 1–8; PO Sur-reply 1–8. Because we deny institution
`of inter partes review on the merits of the Petition, we make no reference in
`this Decision to the documents and information that the parties seek to
`protect as confidential information in this proceeding. See Paper 21 (Order
`granting the parties Motions to Seal).
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, the Board applies the same
`claim construction standard as applied in federal courts in a civil action
`under 35 U.S.C. § 282(b), which is generally referred to as the Phillips
`standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415
`F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, words of
`a claim are generally given their ordinary and customary meaning. Phillips,
`415 F.3d at 1312.
`
`9
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`IPR2021-01399
`Patent 10,013,605 B1
`Petitioner contends that, for purposes of this proceeding, we should
`adopt the constructions that Patent Owner proposes in the related district
`court proceeding for the claim terms “handheld mobile device,” “portable
`device,” and “digital camera.” See Pet. 10–12. The constructions that
`Patent Owner proposes in the related district court proceeding for these three
`claims terms are set forth in the table below:
`
`Claim Term
`“handheld mobile device”
`“portable device”
`“digital camera”
`
`Patent Owner’s Proposed Construction
`“handheld computing device”
`“computing device capable of being easily
`moved manually”
`No further construction necessary
`
`Pet. 11 (citing Ex. 1059, (Joint Claim Construction and Prehearing
`Statement), 177; Ex. 1002 ¶ 41). According to Petitioner, “[f]or this IPR
`proceeding, Petitioner relies on [Patent Owner]’s constructions and
`applications of the terms ‘handheld mobile device,’ ‘portable device,’ and
`‘digital camera.’” See id. at 12 (citing Ex. 1002 ¶ 42).
`Petitioner also notes that Patent Owner, in the related district court
`proceeding, asserted that claims 1 and 12 are broad enough to read on a
`mobile device with an integrated digital camera. See Pet. 11 (quoting
`Ex. 1043 ¶¶ 47, 49, 51). Petitioner further notes that in the prior covered
`business method proceeding, Patent Owner made a similar contention. See
`id. at 11–12 (quoting Wells Fargo Bank, N.A. v. United States Auto. Ass’n,
`CBM2019-00029, Paper 10, 37 (PTAB July 17, 2019)).
`
`Patent Owner contends that, on November 22, 2021, the district court
`issued a claim construction order that expressly rejected Petitioner’s
`
`
`7 All page number references are to the page numbers inserted by Petitioner
`in the bottom, left-hand corner of each page in Exhibit 1059.
`
`10
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`IPR2021-01399
`Patent 10,013,605 B1
`proposed constructions and, instead, adopts Patent Owner’s proposed
`constructions. See Prelim. Resp. 23 (citing Ex. 1061 (Claim Construction
`Memorandum Opinion and Order), 18–19). The district court’s
`constructions are summarized in the table below:
`Clam Term
`District Court’s Construction
`“mobile device”
`“handheld computing device”
`“digital camera”
`Plain meaning
`“mobile device associated
`Plain meaning (apart from the district
`with an image capture device”
`court’s construction of “mobile device”)
`“computing device capable of being easily
`“portable device”
`moved manually”
`See Prelim. Resp 23 (citing Ex. 1061, 20).
`Patent Owner contends that, for the purpose of this proceeding,
`Petitioner departs from its narrow constructions advanced in the related
`district court proceeding, and requests that we adopt the constructions
`proposed in the district court by Patent Owner and adopted by the district
`court. See Prelim. Resp. 22–24 (quoting Ex. 1059, 17; Ex. 2008, 10;
`Ex. 1061, 20; Pet. 10, 17; citing Pet. 16–25). Patent Owner asserts that
`Petitioner’s approach to claim construction violates the requirement of 37
`C.F.R. § 42.104(b)(3) that the Petition set forth “how the challenged claim is
`to be construed.” See id. at 24–25. On this basis, Patent Owner asserts that
`we should decline to institute review. See id. at 25.
`Although Patent Owner takes issue with Petitioner’s approach to
`claim construction for this proceeding, Patent Owner does not urge us to
`reject constructions for the claim terms proposed by Patent Owner and
`adopted by the district court. See Pet. 22–25; Ex. 1059, 17; Ex. 1061, 20.
`Because there is no dispute between the parties as to the construction of
`these claim terms, we need not construe these claim terms for the purpose of
`this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`11
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`Patent 10,013,605 B1
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`B. The Level of Ordinary Skill in the Art
`Petitioner asserts that
`[a] person of ordinary skill in the relevant field or art [] at relevant
`times (2006-2017) of the ’605 [P]atent would have had a
`Bachelor’s degree in computer science, computer engineering,
`electrical engineering, or equivalent field, and two years of
`experience in software development and programming in the
`area of
`image capturing/scanning
`technology
`involving
`transferring and processing of image data to and at a server. Less
`work experience may be compensated by a higher level of
`education, and vice versa.
`Pet. 12 (citing Ex. 1002 ¶ 39). For the purpose of the Preliminary Response
`only, Patent Owner applies Petitioner’s proposed level of ordinary skill at.
`Prelim. Resp. 21.
`For the purpose of this Decision, we adopt Petitioner’s definition of a
`person of ordinary skill in the art.
`
`C. Challenges to Patentability based on Oakes I, Oakes II,
`Medina, and Roach
`The ’605 Patent issued from U.S. Patent Application No. 15/663,284,
`filed on July 28, 2017. Ex. 1001, codes (21), (22). The ’605 Patent, through
`intervening U.S. Patent Application No. 14/225,090, claims entitlement to
`the benefit to an earlier effective filing date of October 31, 2006, based on
`U.S. Patent Application No. 11/590,974, which issued as US. Patent
`No. 8,708,227 B1. Id. at code (63); Ex. 1015, 105, 121. The parties agree
`that the ’605 Patent Specification is substantively identical to the ’974
`
`12
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`Application Specification. See Pet. 32 (stating that “Oakes I issued from
`the ’974 Application, and shares the specification and figures with the ’605
`[P]atent.”); Prelim. Resp. 24 n.6 (stating that “[t]he ’974 Application is the
`first application in a chain of direct continuation applications leading to
`the ’605 [P]atent and thus substantively identical to the ’605 [P]atent
`specification”).
`Petitioner argues that each of Oakes I, Oakes II, Medina, and Roach,
`qualify as prior art to the challenged claims of the ’605 Patent because these
`claims are not entitled to the benefit of a filing date earlier than July 28,
`2017. Pet. 4–5, 12–32. To support its argument, Petitioner asserts that
`the ’974 Application, which is the basis for the ’605 Patent’s claim to
`entitlement to an earlier effective filing date of October 31, 2006, does not
`provide sufficient written description support for the following: (1) a
`portable/handheld mobile device with an integrated digital camera; (2)
`initiating the mobile check deposit after performing the confirming step and
`confirming that the mobile check deposit can go forward after performing
`OCR on the check; and (3) the transmitted copy of the electronic images
`having a different electronic format than the images captured with the digital
`camera. See id. at 12–32. In response, Patent Owner argues that Petitioner
`fails to demonstrate that Oakes I, Oakes II, Medina, and Roach qualify as
`prior art to the challenged claims of the ’605 Patent, because Petitioner fails
`to put forth credible evidence supporting its assertion that the ’605 Patent
`claims lack written description support in ‘the ’974 Application. See Prelim.
`Resp. 25–26.
`After reviewing the parties’ arguments and cited evidence, we
`determine that Petitioner does not demonstrate that Oakes I, Oakes II,
`Medina, and Roach qualify as prior art to the challenged claims of the ’605
`
`13
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`IPR2021-01399
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`Patent. Accordingly, Petitioner has not demonstrated that there is a
`reasonable likelihood that it would prevail in challenging any one of
`claims 1–29 of the ’605 Patent. We begin our analysis with the principles of
`law that apply generally to a patent’s entitlement to an earlier effective filing
`date based on written description support in the earlier-filed application.
`Next, we focus on the parties’ disputes and analysis of whether Petitioner
`demonstrates the ’605 Patent is not entitled to an earlier effective filing date,
`and, based on the outcome of this priority dispute, whether Oakes I,
`Oakes II, Medina, and Roach qualify as prior art to the challenged claims of
`the ’605 Patent.
`
`1. Principles of Law
`“It is elementary patent law that a patent application is entitled to the
`benefit of the filing date of an earlier filed application only if the disclosure
`of the earlier application provides support for the claims of the later
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “To satisfy the written
`description requirement [in § 112, first paragraph,] the disclosure of the prior
`application must ‘convey with reasonable clarity to those skilled in the art
`that, as of the filing date sought, [the inventor] was in possession of the
`invention.’” Id. (second alteration in original) (quoting Vas-Cath Inc. v.
`Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)).
`“[T]he hallmark of written description is disclosure.” Ariad Pharm.,
`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
`sufficiency of written description support is based on “an objective inquiry
`into the four corners of the specification from the perspective of a person of
`ordinary skill in the art.” Id. “Based on that inquiry, the specification must
`
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`IPR2021-01399
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`describe an invention understandable to that skilled artisan and show that the
`inventor actually invented the invention claimed.” Id. “[T]he level of detail
`required to satisfy the written description requirement” necessarily “varies
`depending on the nature and scope of the claims and on the complexity and
`predictability of the relevant technology.” Id. The invention need not be
`described in haec verba, but a disclosure that merely renders obvious the
`claims does not provide adequate written description support. Id. at 1352.
`The written description requirement “guards against the inventor’s
`overreaching by insisting that he recount his invention in such detail that his
`future claims can be determined to be encompassed within his original
`creation.” Vas-Cath, 935 F.2d at 1561; see also Cooper Cameron Corp. v.
`Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002) (“[A]
`broad claim is invalid when the entirety of the specification clearly indicates
`that the invention is of a much narrower scope.”). However, “[a] claim will
`not be invalidated on section 112 grounds simply because the embodiments
`of the specification do not contain examples explicitly covering the full
`scope of the claim language.” LizardTech, Inc. v. Earth Resource Mapping,
`Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336, 1344 (Fed. Cir. 2001) (“[A]n applicant is not required to
`describe in the specification every conceivable and possible future
`embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S.
`Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (“If [the applicant]
`did not consider the precise location of the lockout to be an element of his
`invention, he was free to draft [his claim] broadly (within the limits imposed
`by the prior art) to exclude the lockout’s exact location as a limitation of the
`claimed invention. Such a claim would not be unsupported by the
`
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`specification even though it would be literally infringed by undisclosed
`embodiments.” (citation omitted)).
`
`2. The Parties’ Disputes
`Petitioner contends that the ’605 Patent’s claim to entitlement of the
`earlier effective filing date of the ’974 Application is improper because
`the ’974 Application does not provide sufficient written description support
`for the claims of the ’605 Patent. See Pet. 4–5, 12–13. Specifically,
`Petitioner asserts that the following limitations are insufficiently supported:
`(1) “a portable device” and “a digital camera” recited in claim 1 and
`“handheld mobile device with a digital camera” recited in independent
`claim 12 (see id. at 16–29); (2) “confirming that the deposit can go forward
`after performing an optical character recognition on the check . . . ; initiating
`the deposit after the confirming [step]” recited in claims 1 and 12 (see id.
`at 30–31); and (3) “the transmitted copy of the electronic images is a
`modified version of the electronic images captured with the digital camera,
`the modified version having a different electronic format than the images
`captured with the digital camera” recited in claim 1, and similarly recited in
`claim 25 (see id. at 31–32). See also Ex. 1001, 15:10–15, 15:36–43,
`15:65–62, 16:30–33, 16:61–67 (claims 1 and 12). Petitioner contends that
`the lack of written description support for these limitations “is fatal to the
`priority claim of all claims of the ’605 [P]atent.” Id. at 17.
`In response, Patent Owner asserts that Petitioner “fails to put forth
`credible evidence supporting its assertion that the ’605 [P]atent claims lack
`support in the original specification.” Prelim. Resp. 26. Patent Owner
`contends that the ’974 Application provides written description support for
`all of the limitations identified by Petitioner. See id. at 30–65. Patent
`
`16
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`IPR2021-01399
`Patent 10,013,605 B1
`Owner submits that Petitioner fails to sufficiently show that Oakes I,
`Oakes II, Medina, and Roach qualify as prior art to the challenged claims of
`the ’605 Patent and, therefore, institution should be denied. Id. at 25–26.
`
`3. Analysis of Written Description Support
`“portable device” and “digital camera” /
`“handheld mobile device with a digital camera”
`We begin our analysis of the first disputed claim limitation (which we
`refer to as “the device limitations”) by clarifying the issue presented with
`respect to it.8
`Petitioner contends the ’974 Application does not provide sufficient
`written description support for the device limitations because the device
`limitations are broad enough to include “a mobile device with an integrated
`digital camera” and such a device is not described in the ’974 Application.
`See Pet. 12–13, 16–29. Notably, elsewhere, Petitioner affirmatively
`contends that the ’974 Application discloses the device limitations—in fact,
`Petitioner’s obviousness argument is predicated on this contention. See
`Pet. 35–40 (arguing that Oakes I, the patent that issued from the ’974
`Application, alone teaches this limitation). Accordingly, for its written
`description argument, Petitioner takes issue only with the scope of the
`device limitations. See id. at 39–40 (addressing the interplay between the
`written description and obviousness arguments). The issue is specifically
`whether the claim is overbroad (and thus lacking in written description
`
`
`8 We consider only the arguments presented in the Petition. Although we do
`not agree with these arguments, our Decision should not be construed as an
`independent assessment of whether the ’974 Application provides written
`description support for the invention claimed in the ’650 Patent.
`
`17
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`IPR2021-01399
`Patent 10,013,605 B1
`support) because the claim scope permits the image capture device to be
`integrated into the mobile device.
`Petitioner begins its argument with two premises, which we assume
`arguendo to be true for purposes of this Decision. First, Petitioner contends
`that we should understand the device limitations to be broad enough to
`include a mobile device with an integrated digital camera. Pet. 11–12, 14.
`Second, Petitioner contends that the ’974 Application does not disclose a
`digital camera integrated with the portable/mobile device. See Pet. 13,
`25–26; see also id. at 19–26 (analysis supporting assertion).
`But, even accepting these premises, we disagree with Petitioner’s
`conclusion. In particular, Petitioner appears to contend that we should find
`that the ’974 Application does not provide written description support for the
`device limitations merely because the scope of the claims encompass a
`configuration that is not expressly described in the ’974 Application. See
`Pet. 17–26. But this reflects a misunderstanding of the law—a claim can be
`broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at
`1344 (“[A]n applicant is not required to describe in the specification every
`conceivable and possible future embodiment of his invention.”); see also
`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7
`(Fed. Cir. 1996) (noting that a claim may be “literally infringed by
`undisclosed embodiments” and yet sufficiently supported); In re Smythe,
`480 F.2d 1376, 1384 (CCPA 1973) (“We cannot agree with the broad
`proposition . . . that in every case where the description of the invention in
`the specification is narrower than that in the claim there has been a failure to
`fulfill the description requirement in section 112.”).
`We acknowledge that there are situations where a claim’s breadth
`results in a lack of written description support, but Petitioner fails to show
`
`18
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`IPR2021-01399
`Patent 10,013,605 B1
`that such a situation is present here. In its argument, Petitioner primarily
`relies on Reckitt, but this case is unavailing. See Pet. 16–18 (citing Reckitt
`Benckiser LLC v. Ansell Healthcare Products LLC, IPR2017-00063,
`Paper 38 (PTAB Jan. 30, 2018)). First, Reckitt is a non-precedential Board
`decision, which is not binding on this panel.9 Second, and perhaps more
`importantly, the case is readily distinguishable on its facts. See Prelim.
`Resp. 30–33 (distinguishing Reckitt). In particular, in Reckitt, the panel
`found that claims lacking a pre-vulcanization requirement lacked written
`description support in the priority document, noting that “[p]re-vulcanization
`[was] not some ancillary feature but rather the very heart of the invention.”
`Reckitt, IPR2017-00063, Paper 38 at 12 (emphasis added); see also id.
`at 14–15. However, as pointed out by Patent Owner, “Petitioner identifies
`nothing whatsoever in the ’974 Application suggesting that it is important—
`much less the ‘very heart of the invention’—that the described image
`capture device be in a housing entirely separate from the described general
`purpose computer.” Prelim. Resp. 31. In fact, the Petition identifies (and
`we perceive) no reason why the relative location of the general purpose
`computer and the image capture device is even relevant to the invention
`described in the ’974 Application.
`Returning to the ’974 Application, it describes an invention for remote
`deposit of a check using a general purpose computer (such as a laptop) that
`receives an image of the check from an associated image capture device
`
`
`9 In addition, written description is an “intensively fact-oriented” inquiry,
`and consequently, another case, with its “necessarily varied facts,” is
`highly unlikely to “control[] the resolution of the written description issue
`in this case.” Indivior UK Ltd. v. Dr. Reddy’s Labs. S.A., 18 F.4th 1323,
`1329 (Fed. Cir. 2021).
`
`19
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`IPR2021-01399
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`(such as a digital camera). E.g., Ex. 1042 ¶¶ 9, 19, 21, 29, 33. What is
`important to the invention is that the image capture device and general
`purpose computer are communicatively coupled, not their lo
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